Page 1
9 of 31 DOCUMENTS
BP PRODUCTS NORTH AMERICA, INC., a Maryland corporation, Plaintiff, vs.
SUPER STOP 79, INC., a Florida Corp. and MAHAMMAD QURESHI, an individual, Defendants.
Case No.:06-60307-CIV--COOKE/BROWN
UNITED STATES DISTRICT COURT FOR THE SOUTHERN DISTRICT OF
FLORIDA, MIAMI DIVISION
464 F. Supp. 2d 1253; 2006 U.S. Dist. LEXIS 88503; 20 Fla. L. Weekly Fed. D 224
December 7, 2006, Decided
COUNSEL: [**1] For BP Products North America
Inc., a Maryland Corporation, Plaintiff: Mark Blumstein,
LEAD ATTORNEY, Moises Melendez, LEAD ATTORNEY, Gordon Hargrove & James, Fort Lauderdale,
FL.
For a Florida Corp., Mahammad Qureshi, Defendants:
Emily Joyce Phillips, LEAD ATTORNEY, Ainslee R.
Ferdie, Coral Gables, FL; Lee H. Schillinger, LEAD
ATTORNEY, Hollywood, FL.
For a Florida Corp., Mahammad Qureshi, Counter
Claimants: Lee H. Schillinger, LEAD ATTORNEY,
Hollywood, FL.
For BP Products North America Inc., Counter Defendant: Moises Melendez, LEAD ATTORNEY, Gordon
Hargrove & James, Fort Lauderdale, FL.
JUDGES: MARCIA G. COOKE, United States District
Judge.
OPINION BY: MARCIA G. COOKE
OPINION
[*1254] ORDER DENYING DEFENDANTS' MOTION TO DISMISS COUNTS IX, X, AND XI
THIS CAUSE is before the Court upon Defendants'
Motion to Dismiss Counts IX, X, and XI, filed April 15,
2006. Plaintiff filed its response on May 19, 2006. The
Defendants did not file a reply brief. The Court having
reviewed the Motions finds, for the reasons set forth below, that Defendants' Motion should be denied.
I. BACKGROUND
In this action, Plaintiff BP Products North America,
Inc. ("BP") seeks to enjoin the Defendants [**2] Super
Stop 79, Inc. ("Super Stop") and Mohammed Qureshi
("Qureshi") from the alleged unauthorized sale [*1255]
by them of non-BP fuel while using BP trademarks in
violation of the Lanham Act (15 U.S.C. § 1114et seg. )
and Florida law. See Compl. BP alleges that Super Stop
is a Florida corporation with its principal place of business in Broward County, Florida. Id. at P 2. BP avers that
since 1995 Super Stop has operated a BP Station at 5411
West Sterling Road in Davie, Florida (the "Davie Station"). Id. According to BP, Quershi is a Florida citizen
residing in the Southern District of Florida who holds
himself out as the President of Super Stop. Id. at P 3.
BP asserts that: (i) the BP name; (ii) the Green and
Yellow Design mark; (iii) the BP Helios mark; (iv) the
Amoco name; (v) the Silver mark; and (vi) the Ultimate
mark (collectively referred to as the "Marks") are registered with the U.S. Patent and Trademark Office and
have been continuously used by BP. Id. at P 7, 10. BP
alleges that it uses the marks as a "key component of its
effort to sell, distribute and market gasoline, automotive
and convenience-store services." Id. at P 8. BP [**3]
avers that it licenses its Marks in the U.S. on a limited
basis. Id. at P 12-16. BP alleges that since 1995 Super
Stop has operated the Davie Station and prominently
displayed BP Marks to customers and potential customers at the Davie Station. Id. at P 17-18. BP avers that the
use of BP Marks at the Davie Station is governed by: a
Dealer Supply Agreement dated January 19, 2005
("Supply Agreement"); and a Rider Dealer Supply
Agreement dated January 19, 2005 ("Rider") between BP
and Super Stop. Id. at P 19. According to BP, these
agreements establish the following: (i) Super Stop may
only use the BP Marks in connection with the advertising, distribution, and/or sale of BP products; (ii) Super
Page 2
464 F. Supp. 2d 1253, *; 2006 U.S. Dist. LEXIS 88503, **;
20 Fla. L. Weekly Fed. D 224
Stop may only use the BP Marks in accordance with the
guidelines and standards issued by BP; (iii) Super Stop
cannot use the BP Marks in connection with the advertising, distribution, or sale of any product not selected or
supplied by BP; and (iv) if Super Stop for any reason
discontinues the sale of any grade of BP's motor fuels
then it must remove from display on the Davie Station or
conceal in a manner approved by BP all signs, decals,
logos, emblems, and trade identities of BP. [**4] Id. at
P 21.
BP contends that since at least February 2006, Super
Stop used the BP Marks to sell non-BP fuel. Id. at P 22.
Further, BP alleges that the fuel being sold at the Davie
Station is not a product designed or supplied by BP. Id.
at P 23. In addition, BP alleges that the Davie Station has
ceased buying BP fuel. Id. at P 24. BP asserts the following causes of action: trademark and service mark
infringement under § 32 of the Lanham Act (15 U.S.C. §
1114), common law trademark and service mark infringement; false designation of origin under § 43(a) of
the Lanham Act (15 U.S.C. § 1125(a); common law unfair competition; and dilution and tarnishment under §
43(c) of the Lanham Act (15 U.S.C. § 1125(c)).
II. PROCEDURAL HISTORY
Defendants filed their Motion to Dismiss Counts IX,
X, and XI on April 15, 2006. Plaintiff filed its response
on May 19, 2006. The Defendants did not file a reply
brief. However, on November 1, 2006, this Court ordered the Parties to submit additional briefs on several
issues outlined in Defendants' Motion. See DE 53. In
compliance with that Order, the [**5] Parties submitted
additional briefs on November 23, 2006. Thus, Defendants' Motion to Dismiss Counts IX, X, and XI is ripe for
adjudication.
III. STANDARD
A. STANDARD GOVERNING 12(B)(6): FAILURE
TO STATE A CLAIM
"[W]hen considering a motion to dismiss, the court
must accept all allegations of fact [*1256] as true and
should only dismiss when it appears to a certainty that
the plaintiff would not be entitled to relief under any
state of facts which could be proven in support of his
claim." Solis-Ramirez v. U.S. Dept. of Justice, 758 F.2d
1426, 1429 (11th Cir. 1985) (citing Holt Civic Club v.
City of Tuscaloosa, 439 U.S. 60, 65-66, 99 S. Ct. 383, 58
L. Ed. 2d 292 (1978)). See Duke v. Cleland, 5 F.3d 1399,
1402 (11th Cir. 1993). A court may dismiss a complaint
pursuant to Federal Rule of Civil Procedure 12(b)(6)
when, on the basis of a dispositive issue of law, no construction of the factual allegations will support the cause
of action. Marshall Cty. Bd. of Educ. v. Marshall Cty.
Gas Dist., 992 F.2d 1171, 1174 (11th Cir. 1993). However, "the Federal Rules of Civil Procedure do not require a claimant [**6] to set out in detail the facts upon
which he bases his claim. To the contrary, all the Rules
require is 'a short and plain statement of the claim' that
will give the defendant fair notice of what the plaintiff's
claim is and the grounds upon which it rests." Conley v.
Gibson, 355 U.S. 41, 47-48, 78 S. Ct. 99, 2 L. Ed. 2d 80
(1957).
B. STANDARD GOVERNING 12(B)(3): IMPROPER
VENUE
The Eleventh Circuit has established that motions to
dismiss premised upon choice of forum and/or choice of
law clauses are properly brought pursuant to 12(b)(3) of
the Federal Rules of Civil Procedure as motions to dismiss for improper venue. Lipcon v. Underwriters at
Lloyd's, London, 148 F.3d 1285, 1290 (11th Cir. 1998).
Therefore, this Court will consider Defendants' forum
selection clause arguments under a 12(b)(3) improper
venue analysis. In considering a motion to dismiss for
improper venue, "the court may consider matters outside
the pleadings such as affidavit testimony, 'particularly
when the motion is predicated upon key issues of fact."'
Wai v. Rainbow Holdings, 315 F.Supp.2d 1261, 1268
(S.D.Fla.2004) (quoting Webster v. Royal Caribbean
Cruises,
Ltd.,
124
F.Supp.2d
1317,
1320
(S.D.Fla.2000)). [**7] On a motion to dismiss based on
improper venue, the plaintiff has the burden of showing
that venue in the forum is proper. Wai, 315 F.Supp.2d at
1268. The court must accept all allegations of the complaint as true, unless contradicted by the defendants' affidavits, and when an allegation is so challenged the
court may examine facts outside of the complaint to determine whether venue is proper. Id. Finally, the court
must draw all reasonable inferences and resolve all factual conflicts in favor of the plaintiff. Id.
IV. ANALYSIS
In their Motion, the Defendants seek to dismiss
Counts IX, X, and XI of the Complaint on the grounds
that a forum selection clause requires those claims to be
brought in the Seventeenth Judicial Circuit Court in and
for Broward County, Florida. Mot. 3-5. Additionally,
Defendants seek to dismiss Count VII's claims against
Defendant Mahammad Qureshi. The Court will address
each of Defendants' contentions in turn.
A. COUNTS IX, X, AND XI SHALL NOT BE DISMISSED
Counts IX and X of the Complaint assert causes of
action for amounts which the Defendants allegedly owe
to Plaintiff under the terms of two separate promissory
[**8] notes (Notes I and II respectively). Count XI of
Page 3
464 F. Supp. 2d 1253, *; 2006 U.S. Dist. LEXIS 88503, **;
20 Fla. L. Weekly Fed. D 224
the Complaint asserts that Defendant Qureshi breached a
personal guaranty by allegedly failing to repay monies
allegedly owed to Plaintiff under the terms of a Supply
Agreement, a Rider, and Notes I and II. However, Defendants contend that Notes I and II contain forum selection clauses which establish that the Seventeenth Judicial
Circuit Court in and [*1257] for Broward County,
Florida is the exclusive forum and jurisdiction for any
action brought to recover upon Notes I and II. Notes I
and II were attached to the Amended Complaint as Exhibits E and F. The forum selection clauses contained
within the Notes state the following:
The parties acknowledge and agree
that any action or proceeding by the Borrower or any guarantor (as the case may
be) against the Lender or by Lender
against the Borrower or any guarantor
with respect to any matters arising out of
or in any way relating to the Note shall be
brought exclusively in the State of Florida, before the Circuit Court in and for the
County of Broward, Florida (the "State
Court") and, accordingly, venue and/or
jurisdiction shall lie therein. Further, the
Borrower and Lender (by its acceptance
[**9] of delivery of this Note) hereby
irrevocably consent and submit to the jurisdiction of the State Circuit with respect
to any action or proceeding brought
therein concerning any matters arising out
of or related to the Note.
Compl. Exs. E and F.
It is well settled that parties to a contract may bargain in advance to select the forum in which their disputes will be adjudicated. M/S Bremen v. Zapata
Off-Shore Co., 407 U.S. 1, 12-14, 92 S. Ct. 1907, 32 L.
Ed. 2d 513 (1972). It should be noted, that the Eleventh
Circuit has established that consideration of whether to
enforce a forum selection clause in a diversity jurisdiction case is governed by federal law, under 28 U.S.C. §
1404(a), not state law. See P & S Business Machines,
Inc., v. Canon USA, Inc., 331 F.3d 804, 807 (11th
Cir.2003) (citing Stewart Org., Inc. v. Ricoh Corp., 487
U.S. 22, 28-29, 108 S. Ct. 2239, 101 L. Ed. 2d 22
(1988)). The validity of a forum selection clause is determined under the usual rules governing the enforcement of contracts in general. Canon USA, Inc., 331 F.3d
at 807 (citing In re Ricoh Corp., 870 F.2d 570, 573-74
(11th Cir. 1989)). Thus, a forum selection [**10] clause
should be enforced unless a strong showing is made that
enforcement would be unreasonable and unjust or that
the clause was invalid for such reasons as fraud or overreaching. See In re Ricoh Corp., 870 F.2d at 573-74.
In its opposition, BP did not suggest or contend that
the forum selection clauses at issue in the present action
should be found invalid due to fraud or overreaching.
Instead, BP contends that enforcement of the clauses
would result in burdensome piecemeal litigation, which
may result in inconsistent judgments. This Court agrees.
It is true that the Parties agreed to a clear and unambiguous forum selection clause which designates the Circuit
Court in and for Broward County, Florida as the exclusive jurisdiction to resolve actions related to Notes I and
II. However, enforcement of the forum selection clauses
may result in inconsistent judgments between this Court
and the Florida state court. For instance, if this Court
were to enforce the forum selection clauses then two
separate suits may arise between the Parties. One suit
would be pending before this Court while the second
would be before the Circuit Court for Broward County,
Florida. The federal [**11] suit would be premised
upon Lanham Act trademark infringement violations
while the state court action would be premised upon a
breach of contract action. However, the claims arise out
of the same operative facts. Moreover, it appears that a
finding that the Defendants committed trademark infringement would necessarily compel a finding that the
Defendants breached the terms of the Notes. See Supply
Agreement. Similarly, a finding that the Defendants
breached the Notes may compel a finding that they
committed trademark infringement. See id. Thus, it
[*1258] appears that the trademark infringement and
breach of contract claims are intertwined such that this
Court's analysis in the trademark infringement action
would appear to have significant bearing on the breach of
contract action. Therefore, the Court finds that the forum
selection clauses contained within Notes I and II should
not be enforced because to do so may result in inconsistent judgments and a waste of judicial resources. See
BP Prods. N. Am., Inc. v. Coral Petroleum, Inc., No.
06-80671, 462 F. Supp. 2d 1221, 2006 U.S. Dist. LEXIS
75816, 2006 WL 2852829, at *2 (S.D. Fla. Oct. 2006)
(finding that remanding two claims pursuant to a forum
selection clause [**12] while retaining jurisdiction over
other claims would waste judicial resources and raise the
possibility of competing judgments).
Further, given this Court's holding that the forum
selection clauses contained within Notes I and II should
not be enforced the Court finds that Plaintiff is not prohibited from bringing Count XI as a means to enforce
Defendant Qureshi's alleged guaranty to repay Plaintiff
monies allegedly due under Notes I and II. See Exs. E
and F. Consequently, Count XI shall not be dismissed.
B. COUNT VII SHALL NOT BE DISMISSED
Page 4
464 F. Supp. 2d 1253, *; 2006 U.S. Dist. LEXIS 88503, **;
20 Fla. L. Weekly Fed. D 224
Next, Defendant Qureshi seeks to dismiss Count
VII's claims, for breach of the Supply Agreement and
Rider, against him. Defendant Qureshi presents several
arguments in support of dismissal. First, Defendant
Qureshi argues that the claim cannot be brought against
him because he was not a party to the Supply Agreement
and/or Rider. Further, Defendant Qureshi argues that the
guaranty cannot serve as a means to tie him to the Supply
Agreement because it was signed in 1995 and is not applicable to the 2005 Supply Agreement and Rider. Finally, Defendant Qureshi argues that there are insufficient allegations in the Amended Complaint to [**13]
demonstrate any nexus between the guaranty sued upon
and the 2005 Supply Agreement. Thus, Defendant
Qureshi appears to argue that Plaintiff has failed to meets
its burden under Rule 8(a) of the Federal Rules of Civil
Procedure. However, the Court finds Defendant
Qureshi's arguments to be premature at this juncture.
The Court will address the sufficiency of Plaintiff's
allegations as a preliminary matter. As previously discussed, the Federal Rules of Civil Procedure do not require a claimant to set out in detail the facts upon which
he bases his claim. Instead, all the Rules require is 'a
short and plain statement of the claim' that will give the
defendant fair notice of what the plaintiff's claim is and
the grounds upon which it rests." Conley, 355 U.S. at
47-48. In the present action, Plaintiff alleges that the
Defendants entered into a Supply Agreement and Rider
with BP which they allegedly breached. Amended
Compl. at P 65-68. Additionally, the Complaint states
"Mahammed Qureshi personally guaranteed the payment
of any and all debts of Super Stop to BP, howsoever such
indebtedness may arise. Mahammed Qureshi breached
his guaranty [**14] obligation to BP by failing to repay
BP monies due pursuant to the Supply Agreement, Rider,
Note I and Note II." Id. at PP 89-90. Thus, the Complaint
alleges that Defendant Qureshi guaranteed the payments
under the Supply Agreement and Rider. While Defendant Qureshi is correct in his contention that the Complaint does not set forth which specific Supply Agreement and Rider Defendant Qureshi allegedly guaranteed,
the Court finds that Plaintiff has adequately stated a
claim under Rule 8(a) of the Federal Rules of Civil Procedure. To hold otherwise would impose a significantly
higher burden than is required under the Federal Rules of
Civil Procedure. See Conley, 355 U.S. at 47-48. [*1259]
Moreover, the Court finds Defendant Qureshi's contentions concerning whether he was a party to the Supply
Agreement and Rider and whether the guaranty involved
in this case is applicable to the 2005 Supply Agreement
and Rider to be premature at this juncture. The proper
resolution of these arguments would appear to require
this Court to consider issues of fact which are outside of
the pleadings. Therefore, the Court will not address these
[**15] arguments at this juncture. However, Defendant
Qureshi may re-raise these arguments through a properly
submitted motion for summary judgment.
V. CONCLUSION
For the reasons set forth above it is
ORDERED AND ADJUDGED that Defendants'
Motion to Dismiss Counts IX, X, and XI is DENIED.
DONE AND ORDERED in Chambers at Miami,
Florida this 7th day of December, 2006.
MARCIA G. COOKE
United States District Judge